About CreativityTech

CreativityTech explores the links between creativity and technology. The blog focuses on presenting information of use to content producers, other creatives and startups. It is produced by Gordon Platt, an attorney, a former Emmy Award winning investigative journalist and founder of Gotham Media, a content marketing and strategic communications company.

Tattoos: Creative Marketing or Fail?

Tattoos represent the ultimate commitment in marketing. Once applied it’s difficult (and sometimes not always entirely possible) to go back. It’s the ultimate sign of loyalty and/or possibly confidence (or naiveté) in one’s continued employment. Just think of the numbers of people now rethinking their once popular LiveStrong tattoos.

Many of the logos and images that people use to convey brand loyalty are, in addition, trademarked images. It’s sometimes a gesture that brands encourage as Nike did when many of its sales corps were tattooed with the trademarked “swoosh.” Sometimes it’s a little bit more complicated. Sam Penix of New York’s Everyman Expresso found out first hand that trademarks and tattoos don’t always mix.

The story really began in 2009 when Sam had the phrase, “I [picture of red coffee mug] NY” emblazoned on the fingers of this right hand. The logo followed. A successful, and highly personal, marketing technique it would seem, until a letter came from the NYS Office of Economic Development:

“Everyman Espresso’s unauthorized and confusingly similar use of the I ♥ NY® logo” violated federal trademark law and implied “a misleading designation of source, origin, endorsement, sponsorship or approval by the New York State Department of Economic Development of your merchandise.”

Thus the campaign ended. No more logo, no more merchandise. Sam’s lawyers sent back a letter saying that the store would comply. But it didn’t end there. Then came a letter for CMG Worldwide, which licenses the NYC trademark. CMG wanted to know the value of the revenues that Everyman generated during the period that it used the trademark so that they could calculate the appropriate amount owed for licensing.

The second letter was a head snapping, attention grabber. Everyman quickly put up a “censored” sign over the logo of its second store in Soho. Sam Penix is enraged that the agency charged with promoting New York business is not only demanding that a small business stop using a logo but that it also pay a penalty for past use.

What about the merits of the case? CMG’s response is 43(a) of the Lanham Act, 15 USC 1125(a), that the Everyman logo is likely to cause confusion:

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person,

That seems a little bit of a stretch. CMG also adds that federal regulations prohibit companies from using any part of the trademark. In 2012 alone New York sent out more than 100 of the letters of the type received by Sam Penix.

It’s not a little business. Last year licenses for the logo brought in more than $25 million. In 2001 even Milton Glaser, the designer of the original ‘70s logo, was threatened with a suit by creating a logo saying “I Love NY More Than Ever” with a smudged heart. In some cases, consistency is a virtue – except when it’s not. In the case of an East Village coffee or in the case of the logo’s designer the negative publicity generated by the controversy is going to outweigh the financial gains.

At least Sam Penix gets to keep the tattoo – at no fee. The caveat, he can no longer use it for promotional purposes.